This article examines whether a color claim in trademarks is redundant from a practical point of view.

Before we begin, it is important for readers to know that in general, when a brand registers logos and stylized words as trademarks, it has the option of claiming a color or colors as a feature of the trademark. If claiming color, a color image must be provided on the trademark registration application. That being said, it also means that a brand has the option of not claiming color as well. In those cases, a grayscale image must be provided.

What is the distinction of filing a trademark without claiming color? When a color claim is not made, trademark protection extends to the trademark irrespective of the color scheme. In other words, the registration for the trademark above protects FedEx’s exclusive right to use the mark not just in black and white, but also in any colors such as purple, orange, green, blue, and many more. By contrast, the trademark registered in color only protects FedEx’s exclusive right to use the purple and bright orange version as claimed in the registration process.

If you are a reader with a sharp mind, you will begin to wonder: why then does a brand need to file a trademark with a color claim when doing so restricts its scope of protection to a certain extent?

The truth is, the inclusion of color claim in a trademark is a nuanced decision that can be either redundant or essential, depending on the specifics of the trademark and its application in commerce. This article explores the circumstances under which including a color claim is necessary and when it might be considered redundant.

When a Color Claim Might Be Redundant

Standard Character Trademarks

In cases where a trademark is registered in standard characters, the protection afforded to the mark is broad. A standard character trademark is protected in any color, typeface, or style. This means that the trademark owner can use the mark in various colors without needing to specify each one in the registration. As a result, including a color claim in such instances can be seen as redundant because the mark already enjoys wide-ranging protection that transcends specific colors.

When a Color Claim Is Necessary

Specific Designs or Logos

When a trademark consists of a specific design or logo where the color plays an integral role in its identity and recognition, including a color claim becomes essential. This ensures that the specific colors used in the design are protected as part of the trademark. For instance, a logo with a distinctive color scheme can be more easily protected against imitation if the colors are explicitly claimed, such as the FedEx color trademark mentioned above.

Trade Dress

Trade dress refers to the overall appearance and packaging of a product, including its color scheme. When the color is a significant aspect of the trade dress, including a color claim helps protect the visual identity associated with the brand. For example, the unique combination of colors used in a product’s packaging can be safeguarded through a color claim, thereby preventing competitors from using similar colors that could confuse consumers.

Color as a Distinguishing Feature

In certain cases, the color itself serves as a distinguishing feature of the trademark, such as FedEx Purple and FedEx Orange. The distinctiveness of these colors is integral to the brand’s identity and consumer recognition. In some industries, colors are strongly associated with certain brands. For instance, in the fashion or cosmetic industries, specific colors may be closely linked to particular brands. In these cases, protecting the color can prevent consumer confusion and protect the brand’s unique identity.

Legal Strategy

From a legal standpoint, including a color claim can strengthen a trademark by providing more specific details about what is protected. However, it can also limit the trademark’s flexibility. A broad claim without color restrictions can offer wider protection across different uses and applications of the mark. Therefore, trademark owners must carefully consider their overall branding and legal strategy when deciding whether to include a color claim.

Of course, if the brand has a larger budget for broader protection coverage, there is no harm in registering the trademarks both with and without a color claim.

Conclusion

Whether including a color claim in a trademark is redundant or necessary depends on the nature of the trademark and how it is used. For standard character trademarks, a color claim might be redundant due to the broad protection already in place. However, for trademarks where color plays a critical role in the brand’s identity, such as specific designs, trade dress, or distinctive color features, including a color claim is essential. Ultimately, the decision should align with the brand’s needs, budget and the desired scope of protection.